Friday, 23 December 2016

T 623/13 - Deficient in clarity

Clear from the words alone?

This examination appeal deals with the clarity of the claims, and whether a clarity deficiency in the claim wording can be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define. In line with established case law, the Board decides that the claims must be clear by themselves.

Reasons for the Decision

1. Main request

The subject-matter of claim 1 of the main request is not clear (Article 84 EPC 1973) at least for the two following reasons:

1.1 "Transformed per pixel information"

1.1.1 The method of claim 1 comprises a step for providing color images comprising "temporal per pixel information". According to claim 1, an electronic processing step transforms said "per pixel information" to "transformed per pixel information" (R', G', B'). The subsequent mathematical processing of claim 1 uses this "transformed per pixel information" (R', G', B') to determine the meta-parameters Cij by solving equation (4) of claim 1. According to the description, example 7, equation (9), the desired biophysical parameters are computed from these meta-parameters Cij. Therefore, it is essential that the meaning of "transformed per pixel information" is clear. However, claim 1 neither defines the transformation for obtaining the "transformed per pixel information", nor the content of the transformed information finally obtained by the electronic processing. The board is, therefore, of the opinion that leaving the meaning of the "transformed per pixel information" undefined contravenes the clarity requirement of Article 84 EPC 1973.1.1.2 During oral proceedings, the appellant argued that the meaning of "transformed per pixel information" was clear from the wording of claim 1, which defined "wherein R', G', B' is the transformed per pixel information for the red, green and blue color space". As would be known to the person skilled in the art, the transformation under debate was a coordinate transformation of the initial "temporal per pixel information" from the RGB color space to another conventional color space, as explained in example 1 on page 53 of the description. Concrete examples of the transformation were given in example 2 on pages 53 to 55 of the description. The skilled person would also know that one of the goals of the transformation was to save the amount of data to be processed by compressing and subsequently decompressing image data. Another known goal of the transformation was to achieve better color separation in the transformed color space, for instance, for emphasizing the change of the tint of a subject's skin.

The board does not find this argument persuasive since the claims must in principle be clear in themselves when read by the person skilled in the art (cf. T 621/12, Reasons, point 2). In the present case, the method claim 1 does not define the meaning of the "transformed per pixel information". This, however, would be necessary for solving the equation (4) in claim 1 and, hence, for obtaining the desired result of measurement data for the biophysical parameters. This clarity deficiency in the claim wording cannot be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define (see in this respect decision T 49/99, Reasons, point 12, referring to decision T 1129/97, OJ EPO 2001, 273, Reasons, points 2.1.2 and 2.1.3). The board is aware of the jurisprudence which acknowledges that an exception to this principle may exist in the particular circumstances of a case (see e.g. decision T 56/04). However, the board sees no exceptional circumstances in the present case that would justify the use of the description for the definition of the matter to be protected by claim 1 as required in Article 84 EPC 1973. The board also notes that the appellant has not provided any argument that the present case involved such exceptional circumstances. Concerning the alleged knowledge of the skilled person, the appellant provided no supporting evidence.

1.2 Function Gij(R',G',B')

1.2.1 The function Gij(R',G',B') is used in equation (4) of claim 1. Concerning this mathematical function, claim 1 merely states that "the Gij are the functions of the R', G', B' ". No further information is given in claim 1 about the type, effect or aim of the function Gij(R',G',B'). Since, however, the exact knowledge of the mathematical expression of the function Gij(R',G',B') is essential for solving the equation (4) and allowing to provide the meta-parameters Cij, the board is of the opinion that claim 1 is not clear within the meaning of Article 84 EPC 1973.

1.2.2 During oral proceedings, the appellant argued that the meaning of the function Gij(R',G',B') was explained in the description of the patent application and that the skilled person would understand how to solve equation (4) of claim 1. In a simplified, exemplary case, the appellant demonstrated on a flip-chart how to solve equation (4) for two meta-parameters C0 and C1 by using information about Gij(R',G',B') which was provided in example 5 on page 57 of the description and information about boundary conditions provided in example 3 on page 56 of the description. The appellant further contended that the function Gij(R',G',B') would be known by the skilled person because it was linked to the biophysical parameter to be measured and these links between Gij(R',G',B') and the desired biophysical parameters were known in the art.

The board is not convinced by these arguments for essentially the same reasons as those given in point 1.1.2. above, i.e. claim 1 must be clear in itself.

2. Auxiliary request

Claim 1 of the auxiliary request differs from claim 1 of the main request in that it comprises a step of extracting the biophysical parameter measurement data from the meta-parameters using an iterative process having the form of equation (9). This amendment, however, does neither clarify the meaning of the "transformed per pixel information" nor the meaning of the function Gij(R',G',B'). The applicant provided no further arguments in favor of clarity of claim 1 than those arguments already submitted for claim 1 of the main request.

Therefore, claim 1 of the auxiliary request lacks clarity for the same reasons as those given in points 1.11.1 and 1.21.2 above (Article 84 EPC 1973).

3. In view of the above, none of the appellant's requests is allowable and, therefore, the board sees no reason to set aside the contested decision. Consequently, the appeal must be dismissed.

2 comments
:

While I cannot judge whether the decision is right or wrong, I find that the reasons are quite poor, e.g. point 1.2.2 appears to be a quick dismissal of at least on first sight quite substantial arguments in support of clarity.

Those arguments rely on examples in the description. The board has already stated that a "clarity deficiency in the claim wording cannot be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define".

So the appellant's argument that the claimed invention can be understood after studying the description may be completely correct, but it misses the point of the objection. The appellant should have amended the claim with the help of the clarifying passages.